WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sparco Srl v. Mr. Alexander Albert W. Gore / Ukrainian Cat. University

Case No. D2003-0448

 

1. The Parties

The Complainant is Sparco Srl, Torino, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Alexander Albert W. Gore / Ukrainian Cat. University, Lviv Rudno, Ukraine.

 

2. The Domain Name and Registrar

The disputed domain name <sparcosrl.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2003. On June 11, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 17, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 7, 2003.

The Center appointed Brigitte Joppich as the Sole Panelist in this matter on August 19, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is an Italian company in the field of accessories for cars and sport clothing. The company is internationally well known particularly through its sponsorship of Formula One racing teams and events. Sparco Srl is the owner of numerous trademarks including the word SPARCO throughout the world, inter alia:

Mark

Country

Registration No.

Priority

SPARCO and device

Italy

335748

May 2, 1983

SPARCO

Italy

717542

July 16, 1997

SPARCO and device

International Registration, extended, inter alia, to Ukraine

478132

May 2, 1983

Srl is the Italian abbreviation of the equivalent of a limited liability company.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.,

(i) the domain name is confusingly similar to the trademarks in which the Complainant has rights and is virtually identical to the trade name Sparco Srl;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name:

- the Respondent has never been commonly known by the domain name or by any trade name similar to Sparco Srl;

- the Respondent has no rights in a trademark, a trade name SPARCO or "Sparco Srl";

- the Respondent is not making a legitimate non-commercial or fair use of the domain name.

(iii) the domain name was registered and is being used by the Respondent in bad faith:

- the registration of a domain name obviously connected with a well-known name by someone with no connection to this name suggests opportunistic bad faith;

- the association between "Sparco" and "Srl" in the domain name constitutes additional evidence of Respondentís intention to refer to the Italian company which owns the trademark SPARCO and trades under the name Sparco Srl;

- Respondent engages in a pattern of preventing owners of trademarks from reflecting their trademarks in a corresponding domain name as he has registered other domain names corresponding to internationally well-known Italian trademarks, for example <astispumante.net>, <elenamiro.net>, <ferrari-scuderia.net>, <nutellaferrero.com>, <zegnaermenegildo.net> and <lanerieagnona.net>. This is additional evidence of bad faith registration as well as bad faith use;

- the default page of <sparcosrl.com> resolves in a pornographic page in Italian language, selling various services connected with pornography. The Respondent attracts, for commercial gain, customers not looking for an adult sex site to his website;

- Respondent uses mouse-trapping effects to prevent Internet users from leaving his website.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name <sparcosrl.com> is confusingly similar to the SPARCO trademarks owned by the Complainant as the additional term "srl" is merely an abbreviation of the Italian legal form of the company "Società a Responsabilità Limitata" and therefore is descriptive. This term is not an adequate criterion for differentiation. In addition, the global top-level domain name identification ".com" has no distinctive function.

The Complainant has therefore satisfied the requirements of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Policy, paragraph 4(c), sets out three illustrative circumstances as examples, which, if proved by the Respondent, shall demonstrate his rights to or legitimate interests in the domain name for purposes under the Policy, paragraph 4(a)(ii), i.e.,

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Respondent has not proved any of the above-mentioned circumstances. To the Panelís knowledge, the domain name can neither be derived from the Respondentís personal name nor the name or the nature of a business operated by him, nor is the Respondent commonly known by the domain name, which was not used in connection with a bona fide offering of goods and services nor in any legitimate non-commercial or fair content. The Panel therefore sees no rights of the Respondent to or legitimate interests in the domain name and finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii), shall be evidence of the registration and use of the domain name in bad faith, including,

"(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he engaged in a pattern of such conduct; or

"(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on its website or location."

When the Respondent registered the domain name he must have been aware of the presence of the Complainantís company as he registered a domain name identical to Complainantís trade name including the abbreviation "Srl." Furthermore, as the Complainant has rights in a trademark covering the territory of the Ukraine, the Panel finds that there is also evidence of Respondentís knowledge of Complainantís trademarks. Finally, the Respondentís use of the domain name for a website in Italian language, the language of the country where the Complainant has its principal seat, is additional evidence of his knowledge of Complainantís rights. Therefore, the Panel finds that the domain name was registered in bad faith.

The Respondent has registered numerous domain names identical or confusingly similar to well-known Italian trademarks. Thereby he prevents the owners of the corresponding trademarks from reflecting their marks in these domain names. This, in the Panelís view, is evidence that the Respondent engages in a pattern of such conduct under the Policy, paragraph 4(b)(ii), and therefore uses the domain name in bad faith.

The domain name is also used to divert traffic intended for the Complainantís website, using a domain name that is the same as the trademarks of the Complainant to link to a pornographic website. Thereby, the Respondent attempts to attract Internet users to his website by creating a likelihood of confusion with Complainantís trademarks. As some services under the domain name are offered for payment, the Panel assumes that this attempt was made for commercial gain, as set out in the Policy, paragraph 4(b)(iv).

The Respondent is using "mouse-trapping" techniques to prevent customers from leaving the website under the domain name. In connection with pornographic content this has already been found to reinforce bad faith use in former decisions.

Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the domain name <sparcosrl.com> be transferred to the Complainant.

 


 

Brigitte Joppich
Sole Panelist

Dated: August 22, 2003